Topic 3: Families

Lutz Mailänder Bangkok 21-23 November 2012 Head, Patent Information Section Hanoi 26-28 November 2012 Global IP Infrastructure Sector Agenda

Families – why Families – which Types Unity of Families – implications for examination External results, worksharing Families – where

Resources

WIPO Handbook: http://www.wipo.int/standards/en/pdf/08-01-01.pdf EPO: http://www.epo.org/searching/essentials/patent-families.html PIUG: http://wiki.piug.org/display/PIUG/Patent+Families Landon IP: http://www.intellogist.com/wiki/Patent_Families

Origin of patent families

Patent protection for particular is territorial, i.e. inventors have to seek protection in different countries Office of first filing (OFF) is usually in country of residence of or applicant Subsequent filings of improvements at OFF Applicants seek protection abroad (“extensions”) Office(s) of second filing (OSF) Parallel with OFF (cost), or Deferred, delayed All filings/applications for “same invention” constitute a

Origin of patent families

Patent applications can claim priorities of earlier applications (filed in same or other IPOs) Priorities create (legal) family relations between respective earlier and later filings Family relations may exist also without claiming priorities (e.g., technical families)

Types of patent families

Priorities are claimed National families Filings abroad: Paris convention (&TRIPS) family Filings abroad: PCT system family

Without priorities Technical families Domestic families PCT

Families on national level

National second filings

Patent of addition Improvement of original invention of parent patent Unity with parent patent to be given; i.e. as if further independent claim of parent patent Depends on validity of parent patent Request possible up to 18 months after filing of patent patent National second filings

Division E.g. for healing a lack of unity Possible usually anytime until grant enters into force

„Continuation in part“ New national application claiming priority of one or several previous national application Up to 12 months after filing date of claimed priority

National and domestic families

National family Any national patent applications having at least on priority in common, e.g. additions, divisions, continuations

Domestic family Subsequent publications of same application, i.e. with same number but with different kind codes, e.g. A1: Publication of application (18 months after filing date) B1: Publication of granted patent Various national publication policies see WIPO Standard ST.16 for kind codes: http://wipo.int/export/sites/www/standards/en/pdf/03-16-01.pdf

Second filings abroad

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Paris Convention of 1883

Covers patents, designs, trademarks,.. Equal protection to nationals and foreigners Foreigners: nationals and residents of Union country Mutual recognition of (Paris Convention) priority rights: at OSF: Treatment of application as if filed on date of first filing, i.e. same prior art 12 month period to claim priority Permits combination of multiple priority rights (same or different countries) As long as national definition of unity is met TRIPS agreement

Agreement on Trade Related Intellectual Property Rights Provides for “derived” Paris Convention priority, termed “convention priority” Members to TRIPS agreement need not sign Paris Convention but need to apply respective paragraphs on priority rights

Patent Cooperation Treaty - PCT

„One-stop shop“ for parallel filing in several states Filing with „receiving office“ Paris priority may be claimed or not International phase administered by WIPO: preliminary search and examination by selected ISAs (International Searching Authority; eg EP, AT, SE, US, JP) National phase administered by national IPOs: Decision on entry into national phase at the latest 30 months after filing/priority date National granting procedures Total of national patents/publications constitute family Summary: Filing patents abroad

1. National Routes

National Patent Offices Patents 2. Regional Route national Regional (ARIPO, EPO) Patents

3. International Route (PCT) Nat. Pat. Off. Int. Search Auth. / Int. Prelim. Exam. Nat. Pat. Off. Authority Reg. Pat. Off.

[International phase] [National phase] Timelines to be observed for OSF filing

Options for extension to other jurisdiction, i.e. to Offices of Second Filing (OSF):

Paris convention & TRIPS : 12 months PCT : 30 months Without priority claim : anytime, but effectively impossible after first publication of OFF since published first filing becomes prior art (e.g. 18 month where OFF publishes applications)

Difficulties with later second filings

OFF

Prior art

Filing date OSF

Prior art Prior art

Priority date Filing date Technical families

Applications for the same invention filed in different countries without claiming priority constitute a technical family Indicators: Inventor name (should be the same) Drawings Title (Claims) Technical/artificial/intellectual family

No priorities claimed explicitly but still same or similar invention, e.g. filings abroad after 12 months Paris period Has to be determined intellectually: Same inventor (Same applicant) Same or similar title, Same drawings Is therefore usually not recorded in any database (Inpadoc to some extent if detected by EPO examiner) Technical families

Risk of not claiming Paris priority: Later filing date implies different prior art, i.e. publications between OFF and OSF filing date are included

OFF OSF

Paris prior art

Non -Paris prior art

Supplementary to-up searches may reveal more prior art than other search reports obtained for family members using the priority Family concepts

Claiming multiple and different priorities in and from different countries may lead to complex family structures, e.g.:

OFF: two applications, e.g. JP-xx, JP-yy OSF: single application claiming priorities of JP-xx+ JP-yy

Various concepts / rules exist for constructing families Largely built on the principle of shared priorities See WIPO Handbook definitions

Samples

Document D1 Prio P1 Document D2 Prio P1 Prio P2 Document D3 Prio P1 Prio P2 Document D4 Prio P2 Prio P3 Document D5 Prio P3 Simple family

All members of a family have same priority or priorities → “Equivalents”

Document D1 Prio P1 Document D2 Prio P1 Prio P2 Document D3 Prio P1 Prio P2 Document D4 Prio P2 Prio P3 Document D5 Prio P3

Family with 2 members Family with 1 member Complex family

All members of a family share at least one priority

Document D1 Prio P1 Document D2 Prio P1 Prio P2 Document D3 Prio P1 Prio P2 Document D4 Prio P2 Prio P3 Document D5 Prio P3

Families with 3 members Extended family

Any member shares at least one priority with at least one other member

Document D1 Prio P1 Document D2 Prio P1 Prio P2 Document? D3 Prio P1 Prio P2 Document D4 Prio P2 Prio P3 Document D5 Prio P3

All documents in same family Summary

Application may belong at the same time to Domestic family National family Simple family Extended family

An extended family may include Several simple families Several domestic families Several national families Content of family members

Claiming the priority of another application for a second filing does not necessarily imply that the content, e.g. descriptions, are identical In case for 2nd filings abroad identity is very likely In general, only parts may be identical, other parts may be added to the 2nd filing, or parts of the 1st filing may be omitted (e.g. in case of continuations) If several priorities are claimed the content is definitively different Similarity for simple – extended families ?

Simple family: family members include basically same inventive subject matter Extended family: family members are in similar technical area; but potentially larger diversity because two family members with different priorities may cover different Patent laws usually stipulate for any , ie for any claimed invention (not for description) Sources of family information

Family information has to be constructed from priority data EPO’s INPADOC database is major source of such family information, retrievable through: EPO’s CCD & Espacenet (simple and extended families) Other free patent information databases, like Depatis Commercial database, e.g. Thomson/Derwent: WPI family Questel/Orbit: Fampat family CAS Using widely INPADOC data, additional sources, and applying proprietary family construction rules

Sources of family information

Inpadoc family (extended)

Simple family (equivalents) Family information in Espacenet

INPADOC family data extended families 80+ countries Update weekly but depending on data supply from IPOs Simple families “also published as” equivalents Used for document reclassification after IPC revisions

DE19830566 > 2 members, is national, domestic, simple DE19833712 Use of family information for examination

► Passive outsourcing/worksharing: Using external results of family members: Final result, i.e. granted claims, rejections Temporary results, i.e. search/examination reports, in particular prior art Planning/scheduling of active worksharing between IPOs, e.g. to avoid duplication of work INPADOC data comprises family information and legal status of family members Legal status data permits the assessment of examination status and an estimate for availability of final results

Use of priority information for examination

► Filing or priority date (s) determine relevant prior art (own or external search results): Multiple priorities may imply multiple priority dates Requires application of different dates for assessing relevant prior art Examiner to determine which of the dates has to be applied for the technical features of each claim To be stated in examination report if different dates apply

Difficulties with multiple priorities

No priority, OFF

Prior art

Filing date Difficulties with multiple priorities

Single priority

Prior art

Priority date Filing date Difficulties with multiple priorities

Different priority dates > different prior art

Prior art ?

Priority date 1 Priority date 2 Filing date Difficulties with multiple priorities

Combining different priority documents implies combination of different technical features

Priority 1 Priority 2 OSF Feature A Feature a Feature B Feature b A, a, B, b, + > C, c, D, d, Feature C Feature c ...... Feature D Feature d Difficulties with multiple priorities

For each claim check which claim subject matter is disclosed in which priority ? If claims derive from different priority documents, different respective priority dates apply for prior art

Prior art for claim 2

Prior art claim 1

Priority date 1 Priority date 2 Filing date Summary

Various family concepts: simple extended technical Depending on priorities Relevant prior art depends on applicable dates

Thank you